The application of 35 U.S.C. § 299 by the Eastern District of Texas in the context of mobile device technology indicates that the third EMC factor, “the use of identically sourced parts,” has become a dispositive factor in its jurisdiction. However, the Eastern District of Texas has considered other EMC factors concerning business relationships among defendants. In Smartflash LLC v.
Apple, Inc., the court permitted joinder of Apple and app developers and held that “the ‘series of transactions or occurrences’ test is satisfied by Apple offering its Store Kit framework to app developers to help them implement in-app payment functionality.”282 While not specifying any EMC factors, the Smartflash court actually applied the fourth EMC factor because the offering of the Store Kit framework can be considered as “licensing or technology agreements between the defendants.”
On the other hand, the Southern District of Florida has applied business-related EMC factors too narrowly. The court in Motorola Mobility, Inc. v. Apple Inc. disregarded the Open Handset Alliance as a basis of some EMC factors, such as “the existence of some relationship among the defendants,” and “overlap of the products’ or processes’
development and manufacture.”283 By adopting a proposition that “that membership in a broad based industry association does not support joinder because ‘[s]imply being a member of an industry organization does not indicate that [d]efendants have jointly designed, developed,
282 Smartflash LLC v. Apple, Inc., No. 6:13-CV-447, 2014 WL 4421657, at *3 (E.D. Tex. Sept. 8, 2014).
283 See Motorola Mobility, Inc. v. Apple Inc., No. 1:12-CV-20271-RNS, 1:10-CV-23580-1:12-CV-20271-RNS, 2012 WL 3113932, at *4 (S.D. Fla. Jul 31, 2012).
manufactured, or sold their [a]ccused [p]roducts,’”284 the court actually admitted that joinder of independent defendants may be based on the fact that the defendants have jointly designed, developed, manufactured, or sold their accused products. The OHA is a group of companies licensed to use Android without charge.285 Google, as the owner of Android, encourages OHA members to implement Google-developed applications in their mobile devices.286 Google also requires OHA members not to develop other operational systems for mobile devices to compete against Android.287 Apparently, the distinct features of the OHA, which the court may be aware of or not, do not amount to a
“relationship” qualified as a basis of permissive joinder from the perspective of the Southern District of Florida.
The counterclaim plaintiff, Apple, in Motorola Mobility, Inc. listed several facts of the OHA with respect to joint development of Android applications. Regarding the second EMC factor, “the existence of some relationship among the defendants,” Apple offered at least three factual allegations.288 First, Apple quoted a news release that states
284 Id. (quoting Body Science LLC v. Boston Scientific Corp., 2012 WL 718495, at *5 (N.D. Ill. March 6, 2012)).
285 See Thomas W. Hazlett, Modular Confines of Mobile Networks: Are iPhones iPhony?, 19 SUP.CT.ECON.REV. 67, 91 (2011).
286 See id. at 92.
287 See Ron Amadeo, Google’s Iron Grip on Android: Controlling Open Source by Any Means Necessary, ARS TECHNICA (Oct. 20, 2013, 6:00 PM), http://arstechnica.com/gadgets/2013/10/googles-iron-grip-on-android-controlling-open-source-by-any-means-necessary/3/
[http://perma.cc/YGR3-KH89].
288 See Apple’s Opp’n to HTC Corp., HTC America, Inc., One &
Company Design, Inc., and HTC America Innovation Inc.’s Motion to Sever at 9–11, Motorola Mobility, Inc. v. Apple Inc., 2012 WL 3113932 (S.D. Fla. May 29, 2012), (No. 1:12-CV-20271-RNS,
1:10-HTC and Motorola “have collaborated on the development of Android through the Open Handset Alliance.”289 Second, Apple pointed out several lines of Android source code or other related software applications marked with a HTC or Motorola copyright.290 Third, Apple asserted that
“Android’s public storage archives … confirm the involvement of both HTC and Motorola employees in its development—including the development of code that is potentially relevant to the patents-in-suit.”291 Apple also specified that both HTC and Motorola employees contributed to GPS (Global Positioning System) codes of Android and that such GPS codes are related to the patent-in-suit.292 Based on these three factual allegations, Apple requested discovery predicting that it would show additional interplay between HTC, Motorola, Google, and other OHA members in the implementation of the accused features of the Android software development.”293 Apple expected such discovery to help support the second EMC factor.294 Regarding the fifth EMC factor, “overlap of the products’ or processes’ development and manufacture,” Apple merely asserted that “the relevant design and development work includes—for both HTC and Motorola—the same work done by OHA participants and Google in designing
CV-23580-RNS), 2012 WL 3186135 [hereinafter Apple’s Opposition].
289 Id. at 10 (quoting Industry Leaders Announce Open Platform for Mobile Devices, OPEN HANDSET ALLIANCE (Nov. 5, 2007), http://www.openhandsetalliance.com/press_110507.html [http://perma.cc/C8SU-NQKP].
290 See id. at 10–11.
291 Id. at 11.
292 See id.
293 Id. at 12.
294 See id.
Android[,] Maps and Play applications.”295 This assertion may be merely a recitation of the fifth EMC factor.
Apple did allege several facts to show HTC and Motorola jointly developed the Android system for mobile devices. But the Southern District of Florida did not consider these facts as requirements of the second or fifth EMC factor. Furthermore, the court did not permit discovery to identify the nature of the OHA. This approach narrows the application of § 299 because it indicates that only defendants who enter into a joint development agreement or joint venture agreement can be joined in one lawsuit.
VI. PROPOSED RESOLUTION
The inconsistency of the applications of § 299 among different district courts should be resolved. Here, this article proposes a “certain connection” approach in light of congressional intent in creating § 299 that incorporates the EMC factors. The “certain connection” approach states that joinder of independent defendants is permissive if their accused products or processes have certain connections with respect to the infringement claims against them.